Representative Matters

 POST-GRANT PROCEEDINGS

• Avanos Med., Inc. v. Stratus Med., LLC (IPR2024-01209, -01210, -01211, -1212) – Back-up counsel for owner of U.S. Patent Nos. 10,925,664; 10,736,688; and 10,966,782, directed to radiofrequency neurotomy surgical instruments. Pending.

• Taprogge GmbH v. K & S Invs., L.P. (Control No. 90/013,995) –  Filed request for ex parte reexamination of U.S. Patent No. 9,370,778, directed to industrial eggshell membrane separation processes, resulting in cancellation of all claims.

• Ultradent Prods., Inc. v. CAO Group (IPR2016-00838) – Lead counsel representing the petitioner challenging U.S. Patent No.8,337,097, directed to surgical laser systems.  Settled under confidential terms prior to institution.

• Chums, Inc. et al. v. Cablz Inc. (IPR2014-01240, IPR2015-00602) – Lead counsel representing the petitioners challenging U.S. Patent No. 8,366,268, directed to eyeglass retainers.  All claims found unpatentable. Affirmed on appeal.

• Ultradent Prods., Inc. v. Kerr Corp. (IPR2015-00051, -00080, -00126, -00139) – Lead counsel representing the petitioner challenging U.S. Patent Nos. 6,692,251; 7,066,733; and 7,210,930, directed to LED-based dental curing devices.  Settled under confidential terms prior to institution.

• Jarden Corp. v. Foodfresh Techs. LLC (Control No. 90/013,013) – Filed request for ex parte reexamination of U.S. Patent No. 7,270,238, directed to vacuum-sealable bags and systems, resulting in cancellation of all claims.

• [Anonymous] v. Duraflame, Inc. (Control Nos. 90/012,440 and 90/012,441) –  Filed requests for ex parte reexamination of U.S. Patent Nos. 8,007,550 and 8,123,824, directed to artificial fire log formulations, resulting in cancellation of all claims.

• Sunbeam Prods., Inc. v. Hamilton Beach Brands, Inc. (Control No. 95/001,956) – Represented requestor in the inter partes reexamination of U.S. Patent No. 7,820,947, resulting in significant claim amendments.

• Graphic Packaging Int’l, Inc. v. Exopack-Tech., LLC (Control Nos. 95/001,638, 95/001,639, and 95/001,640) – Represented owner of U.S. Patent Nos. 6,979,482; 7,090,904; and 7,544,403, directed to multiwalled food-grade bags with integrated zippers.  Patentability of all claims of the ’482 patent, nearly all challenged claims of the ’094 patent, and amended claims of the ’403 patent confirmed, resulting in settlement of copending litigation.  

• The Johns Hopkins Univ. (Application Nos. 12/210,107 and 13/314,021) – Filed and prosecuted both reissue and continuation reissue applications for the reissuance of U.S. Patent No. 7,106,893, yielding U.S. Reissue Patent Nos. RE43,152 and RE43,894, directed to medical image processing technologies.

• RealNetworks LLC (Application Nos. 11/452,187 and 12/547,341) – Prosecuted reissue application, and both filed and prosecuted divisional reissue application, for the reissuance of U.S. Patent No. 6,760,721, yielding U.S. Reissue Patent Nos. RE42,101 and RE46,536, directed to metadata management technologies.

 LITIGATION

• Stratus Med., LLC v. Diros Tech. Inc., NSD 438 of 2019, Federal Court of Australia –  Directed patent infringement litigation based on multiple Australian patents, including two acquired in an asset sale and one subsequently issued with personally crafted claims.  Settled under confidential terms.

 DUE DILIGENCE

• Analyzed strength of patent portfolios and assessed freedom-to-operate risks for acquisition or investment opportunities presented to MedVenture Health (now Wasatch Health).

• Defended strength of patents personally written and prosecuted and defended freedom-to-operate assessments personally made for MedVenture Health’s portfolio companies (listed here) during due diligence by licensees and acquirers, including for sale or licensing of:

• Stiletto® Extended-Dwell Catheter System from Avia Vascular to Vygon.

• BD® Intraosseous Vascular Access System from Piper Access to Becton Dickinson.

• PeriCross™ Epicardial Access System from Talon to CIRCA Scientific.

 PATENT PROCUREMENT AND PORTFOLIO MANAGEMENT

• At MedVenture Health (now Wasatch Health), created from ground up or strengthened U.S. and international patent estates for the medical device and medical manufacturing portfolio companies, including Avia Vascular, Biomerics, Portal, Stratus Medical, Talon Surgical, Triton Endoscopy, Venacore, and Wavepoint Medical.

• At law firms, a substantial focus has been management of patent portfolios, including for larger companies such as Autoliv, Intermountain Health, and Ultradent, or strengthening and expansion of portfolios managed by others, such as for ICU Medical, Merit Medical, and Mindray.

 OPINION WORK

• As Chief IP Counsel of MedVenture Health, guided development of numerous medical devices from conception through commercialization with continual assessments of freedom to operate

• Experienced in preparing non-infringement and invalidity opinions as outside counsel